Sears Brands, LLC v. Alex Pachan
Claim
Number: FA0502000420527
Complainant is Sears Brands, LLC (“Complainant”), represented
by Donald A. Degnan of Holland & Hart LLP,
1800 Broadway, Suite 300, Boulder, CO, 80302.
Respondent is Alex Pachan (“Respondent”),
6160 Northwood Circle, White Lake, MI, 48383.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <searsholdings.com>, registered with Register.com.
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks
Johnson sits as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically February
11, 2005; the National Arbitration Forum received a hard copy of the Complaint February
14, 2005.
On
February 14, 2005, Register.com confirmed by e-mail to the National Arbitration
Forum that the domain name <searsholdings.com> is registered with Register.com
and that Respondent is the current registrant of the name. Register.com
verified that Respondent is bound by the Register.com registration agreement
and thereby has agreed to resolve domain-name disputes brought by third parties
in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the
"Policy").
On
February 22, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of March 14, 2005, by which Respondent could file a Response to the
Complaint, was transmitted to Respondent via e-mail, post and fax, to all
entities and persons listed on Respondent's registration as technical,
administrative and billing contacts, and to postmaster@searsholdings.com by
e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
March 18, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn
Marks Johnson as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration Forum discharged its
responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (the "Rules") "to employ reasonably
available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision
based on the documents submitted and in accordance with the ICANN Policy, ICANN
Rules, the National Arbitration Forum's Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without the benefit of any
Response from Respondent.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name that Respondent
registered, <searsholdings.com>, is confusingly similar to
Complainant’s SEARS mark.
2. Respondent has no rights to or legitimate
interests in the <searsholdings.com> domain name.
3. Respondent registered and used the <searsholdings.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, Sears Brands, LLC, has used its SEARS mark
since 1886 to identify numerous goods and services. Complainant holds several registrations with the United States
Patent and Trademark Office for the SEARS mark (including Reg. No. 642,438
issued March 5, 1957; Reg. No. 1,563,683 issued October 31, 1989; and Reg. No.
1,726,260 issued October 20, 1992).
Complainant has invested billions of dollars in advertising, promoting
and developing goodwill in the SEARS mark.
Complainant has used its SEARS mark for retail stores and catalog
services, repair services for automobiles, installation services in the field
of home improvements and a wide variety of other products and services.
Respondent registered the <searsholdings.com> domain name November 17, 2004. As of the filing of the Complaint, the
disputed domain name resolved to a website that displayed an article from
CNN/Money discussing a possible business deal involving Complainant and another
company in which the resulting company would be named “Sears Holding
Corporation.” This website also
displays Complainant’s SEARS mark and logo as well as the logo of another
company in the retail industry and includes links to Complainant’s website and
the website of one of Complainant’s competitors.
The top of the
website features a message stating: “Site is currently listed for sale on
Afternic.com;” a link invites Internet visitors to: “Click here to make an
offer on this domain name.” Clicking on
this link directs users to a website where they can make an offer for the
domain name and where it is indicated that the asking price for the domain name
is $180,000. This website also states
that the disputed domain name will undoubtedly be the website for “Sears
Holding Corporation.”
Paragraph 15(a)
of the Rules instructs this Panel to "decide a complaint on the basis of
the statements and documents submitted in accordance with the Policy, these
Rules and any rules and principles of law that it deems applicable."
In view of
Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of Complainant's undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
will draw such inferences as the Panel considers appropriate pursuant to
paragraph 14(b) of the Rules.
Paragraph 4(a)
of the Policy requires Complainant to prove each of the following three elements
to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent
is identical or confusingly similar to a trademark or service mark in which
Complainant has rights; and
(2) Respondent has no rights to or legitimate
interests in respect of the domain name; and
(3) the domain name has been registered and
is being used in bad faith.
Complainant
established using extrinsic proof in this proceeding that it has presumptive
rights in the SEARS mark through registration with the United States Patent and
Trademark Office and by continuous use of its mark in commerce for the last one
hundred and nineteen years. See Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that
registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive. Respondent has the burden
of refuting this assumption); see also Men’s Wearhouse, Inc. v. Wick,
FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law,
registered marks hold a presumption that they are inherently distinctive and
have acquired secondary meaning.”).
The <searsholdings.com>
domain name registered by Respondent is confusingly similar to Complainant’s
SEARS mark because the domain name incorporates Complainant’s mark in its
entirety and merely adds the generic or descriptive term “holdings” and the
generic top-level domain (gTLD) “.com.” It has been consistently held under the Policy that the addition
of a generic or descriptive term and a gTLD will not be adequate to distinguish
the domain name from Complainant’s registered mark. See Arthur Guinness
Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001)
(finding confusing similarity where the domain name in dispute contains the
identical mark of Complainant combined with a generic word or term); see
also Sony Kabushiki Kaisha v. Inja,
Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition
of an ordinary descriptive word . . . nor the suffix ‘.com’
detract from the overall impression of the dominant part of the name in each
case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).
Accordingly, the
Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Complainant
established that it has rights to and legitimate interests in the mark
contained in its entirety within the disputed domain name. Complainant alleged that Respondent has no
such rights or legitimate interests in the mark and domain name. Respondent did not file a response to the
allegations set forth by Complainant in the Complaint. In this circumstance, the Panel is entitled
to accept all reasonable allegations and inferences in the Complaint as
true. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000)
(finding that failing to respond allows a presumption that Complainant’s
allegations are true unless clearly contradicted by the evidence); see also
Ziegenfelder Co. v. VMH Enter., Inc.,
D2000-0039 (WIPO Mar. 14, 2000) (drawing two inferences based on Respondent’s
failure to respond: (1) Respondent does not deny the facts asserted by
Complainant, and (2) Respondent does not deny conclusions which Complainant
asserts can be drawn from the facts).
Complainant has
made a prima facie case in support of the assertion that Respondent has
no rights to or legitimate interests in the <searsholdings.com>
domain name that contains Complainant’s SEARS mark in its entirety. Once Complainant makes a prima facie case
in support of its allegations, the burden is shifted to Respondent to show that
it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). However, Respondent has not responded to
Complainant’s allegations and has, thus, presented no proof of Respondent’s
rights or legitimate interests.
Therefore, due to Respondent’s failure to respond to the Complaint, the
Panel will assume that Respondent lacks rights and legitimate interests in the
disputed domain name. See Do
The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding
that once Complainant asserts that Respondent has no rights or legitimate
interests with respect to the domain, the burden shifts to Respondent to
provide credible evidence that substantiates its claim of rights and legitimate
interests in the domain name); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000)
(finding that by not submitting a Response, Respondent has failed to invoke any
circumstance which could demonstrate any rights or legitimate interests in the
domain name).
Respondent is
using the <searsholdings.com> domain name to divert Internet users
to Respondent’s website that displays information about a possible business
deal involving Complainant. The website
also displays links to Complainant and one of Complainant’s competitors in the
retail industry and invites visitors to purchase the domain name registration. The Panel finds that Respondent’s use of the
disputed domain name to lure Internet users in search of Complainant’s famous
SEARS mark to Respondent’s website designed to offer the domain name
registration for sale is not a use in connection with a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See State
Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27,
2000) (“[U]nauthorized providing of information and services under a mark owned
by a third party cannot be said to be the bona fide offering of goods or
services.”); see also Am. Online,
Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000)
(finding that use of the complainant’s mark “as a portal to suck surfers into a
site sponsored by Respondent hardly seems legitimate”); see also Pfizer,
Inc. v. Internet Gambiano Prods., D2002-0325 (WIPO June 20, 2002) (finding
that because the VIAGRA mark was clearly well-known at the time of Respondent’s
registration of the domain name it can be inferred that Respondent is
attempting to capitalize on the confusion created by the domain name’s
similarity to the mark).
The disputed
domain name, <searsholdings.com>, resolves to a website that
offers the domain name registration for sale and requests offers to purchase
the domain name, claiming that the domain name will certainly be for the
official website of “Sears Holdings Corporation.” These circumstances indicate that Respondent was willing to
relinquish any rights in the disputed domain name by selling the domain name
registration, and the Panel finds that this suggests that Respondent lacks
rights and legitimate interests in the disputed domain name pursuant to Policy
¶ 4(a)(ii). See Mothers
Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27,
2003) (holding that under the circumstances, Respondent’s apparent willingness
to dispose of its rights in the disputed domain name suggested that it
lacked rights or legitimate interests in the domain name); see also Wal-Mart Stores, Inc. v. Stork,
D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to
sell the domain name suggests it has no legitimate use); see also Cruzeiro Licenciamentos Ltda v. Sallen,
D2000-0715 (WIPO Sept. 6, 2000) (finding that rights or legitimate interests do
not exist when one holds a domain name primarily for the purpose of marketing
it to the owner of a corresponding trademark).
The Panel found
nothing in the record that suggests that Respondent is commonly known by the <searsholdings.com>
domain name. In fact, Respondent’s
WHOIS information for the domain name indicates that Respondent is identified
as “Alex Pachan” and not by the disputed domain name. Furthermore, Complainant asserts that Respondent is in no way
associated with Complainant and that Respondent is not authorized or licensed
by Complainant to use any variation of Complainant’s SEARS mark. Thus, the Panel finds that Respondent has
not established rights or legitimate interests in the disputed domain name
pursuant to Policy ¶ 4(c)(ii). See
RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting
Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known
by the domain name prior to registration of the domain name to prevail"); see
also Compagnie de Saint Gobain v.
Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or
legitimate interest where Respondent was not commonly known by the mark and
never applied for a license or permission from Complainant to use the
trademarked name).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
The <searsholdings.com>
domain name registered by Respondent appears to have been registered primarily
for the purpose of selling the domain name registration to Complainant or a
third-party competitor. The domain name
resolves to a website that displays an article from CNN/Money discussing a
potential business deal between Complainant and another company that would create
a new company known as “Sears Holdings Corporation.” The website also displays hyperlinks to Complainant’s website and
the website of the other company mentioned in the article. Additionally, the website indicates that the
domain name registration is for sale at an asking price of $180,000. and
invites Internet users to make an offer for the domain name registration via a
hyperlink. These circumstances indicate
that Respondent is aware of Complainant’s rights in the SEARS mark and the
potential value of the domain name to Complainant and that Respondent,
therefore, registered the domain name in an attempt to market it to
Complainant. Thus, the Panel concludes
that Respondent registered the domain name primarily for the purpose of selling
the domain name registration to Complainant for consideration in excess of
Respondent’s out-of-pocket expenses and that this is evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(i). See World Wrestling
Fed’n Entmt., Inc. v. Bosman, D99-0001 (WIPO Jan.
14, 2000) (finding that Respondent used the domain name in bad faith because he
offered to sell the domain name for valuable consideration in excess of any
out-of-pocket costs); see also Gen.
Elec. Co. v. Forddirect.com, Inc., D2000-0394 (WIPO June 22, 2000) (finding
that Respondent registered and used the domain name in bad faith by using the
domain name to direct users to a general site offering the domain name for
sale); see also Wembley Nat’l
Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding bad faith
based on the apparent willingness of Respondent to sell the domain name in
issue from the outset, albeit not at a price reflecting only the costs of
registering and maintaining the name).
Although
evidence of bad faith registration and use may be shown by proving the
existence of any of the four circumstances listed under Policy ¶ 4(b), the
Panel is entitled to consider other factors in support of its finding of bad
faith registration and use. See Twentieth Century Fox Film Corp. v. Risser,
FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that, in determining if a
domain name has been registered in bad faith, the Panel must look at the
“totality of circumstances”); see also Do The Hustle, LLC v. Tropic
Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in
Paragraph 4(b) are intended to be illustrative, rather than exclusive.”).
Respondent’s
registration of the <searsholdings.com> domain name, which
contains Complainant’s well-known SEARS mark in its entirety, suggests that
Respondent knew of Complainant’s rights in the SEARS mark. Furthermore, Respondent mentions Complainant
on the website linked to the disputed domain name and displays Complainant’s
mark and logo on the website. Thus, the
Panel concludes that Respondent chose the disputed domain name based on the
distinctive and famous qualities of Complainant’s mark and that registering a
domain name incorporating Complainant’s mark with knowledge of Complainant’s
rights in the mark is evidence of bad faith registration and use pursuant to
Policy ¶ 4(a)(iii). See Entrepreneur
Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) ("Where an alleged
infringer chooses a mark he knows to be similar to another, one can infer an
intent to confuse."); see also Victoria's
Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that, in
light of the notoriety of Complainants' famous marks, Respondent had actual or
constructive knowledge of the BODY BY VICTORIA marks at the time she registered
the disputed domain name and such knowledge constituted bad faith); see also
Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that
because the link between the complainant’s mark and the content advertised on
Respondent’s website was obvious, the respondent “must have known about the
Complainant’s mark when it registered the subject domain name”).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <searsholdings.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: April 1, 2005.
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